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JOLLIBEE FOODS CORPORATION Vs. STEVE C. CHUA

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JOLLIBEE FOODS CORPORATION Vs. STEVE C. CHUA IP PHL INTELLECTUAL PROPERTY OFFICE OF THE PHILIPPINES JOLLIBEE FOODS CORPORATION, } IPC No. 14-2013-00028 Opposer, } Opposition to: } Appln. Serial No. 4-2011 -009482 -versus- } Date Filed: 10 August 2011 } STEVE C. CHUA, } TM: JOLLY & DEVICE Respondent-Applicant. } v NOTICE OF DECISION QUISUMBING TORRES Counsel for Opposer 12th Floor, Net One Center 26th Street corner 3rd Avenue, Crescent Park West, Bonifacio Global City Taguig, Metro Manila PADLAN SALVADOR COLOMA & ASSOCIATES Counsel for Respondent- Applicant Room 307 ITC Building 337 Sen. Gil Puyat Avenue, Makati City GREETINGS: Please be informed that Decision No. 2017 - 62. dated 07 March 2017 (copy enclosed) was promulgated in the above entitled case. Pursuant to Section 2, Rule 9 of the IPOPHL Memorandum Circular No. 16-007 series of 2016, any party may appeal the decision to the Director of the Bureau of Legal Affairs within ten (10) days after receipt of the decision together with the payment of applicable fees. Taguig City, 08 March 2017. MARILYN F. RETUTAL IPRS IV Bureau of Legal Affairs Republic of the Philippines INTELLECTUAL PROPERTY OFFICE Intellectual Property Center # 28 Upper McKinley Road, McKinley Hill Town Center, Fort Bonifacio, Taguig City 1634 Philippines •www.ipophil.aov.ph T: +632-2386300 • F: +632-5539480 •[email protected] IP PHL INTELLECTUAL PROPERTY OFFICE OF THE PHILIPPINES JOLLIBEE FOODS CORPORATION, IPC No. 14-2013-00028 Opposer, Opposition to: -versus- Application No. 4-2011-009482 Date Filed: 10 August 2011 Trademark: "JOLLY & DEVICE" STEVE C. CHUA, Respondent-Applicant. Decision No. 2017- 62. DECISION JOLLIBEE FOODS CORPORATION1 ("Opposer") filed an opposition to Trademark Application Serial No. 4-2011-009482. The application, filed by Steve C. Chua2 ("Respondent-Applicant"), covers the mark "JOLLY & DEVICE " for use on "plastic housewares namely furniture, particularly: chairs, benches, tables, stools, cabinets, shelves, drawers, frames, cases" under Class 20 and "plastic housewares namely household and kitchen utensils made of plastic particularly containers, bins, boxes, trays, baskets made of plastic" under Class 21 of the International Classification of Goods and Services.3 The Opposer alleges: "4. The registration of the mark JOLLY is contrary to the provisions of Sections 123.1 (d), (e) and (f) of Republic Act No. 8293, as amended, otherwise known as the Intellectual Property Code of the Philippines, which prohibit the registration of a mark that: xxx "5. In determining whether a mark is internationally well-known, Rule 102 of the Implementing Rules and Regulations on Trademarks, Service Marks, Tradenames and Marked or Stamped Containers provides that the following criteria may be taken into consideration: xxx "6. The Trademark Regulations do not require that all of the criteria mentioned above be met before a mark can be considered well known. It expressly states that 'any combination' of the above criteria may be used. Indeed, in Sehwani, Incorporated and/or Benita's Frites, Inc. vs. In-N-Out Burger, Inc., the Supreme Court 1 A domestic corporation organized under the laws of the Philippines with address at 7th Floor, Jollibee Plaza Building, Emerald Avenue, Ortigas Center, Pasig City, Philippines. 2 A domestic corporation with principal office address at 12 Banaybanay, Cabuyao, Laguna, Philippines. 3 The Nice Classification is a classification of goods and services for the purpose of registering trademark and service marks, based on a multilateral treaty administered by the World Intellectual Property Organization. The treaty is called the Nice Agreement Concerning International Classification of Goods and Services for the Purposes of the Registration of Marks concluded in 1957. 1 Republic of the Philippines INTELLECTUAL PROPERTY OFFICE Intellectual Property Center # 28 Upper McKinley Road, McKinley Hill Town Center, Fort Bonifacio, Taguig City 1634 Philippines •www.ipophil.gov.ph T: +632-2386300 • F: +632-5539480 • [email protected] upheld the decision of the Director of the Bureau of Legal Affairs ('BLA') finding 'IN-N- Out' a well-known mark merely on the basis of: (1) a handful of foreign trademark registration for the 'In-N-Ouf trademark; and (2) evidence of the advertising activities for the 'In-N-Out' trademark. Please note that none of the registrations or advertising presented in the 'In-N-Out' case occurred in the Philippines. "7. As the only Supreme Court case applying Rule 102 of the Trademark Regulations, the 'In-N-Out' case sets the benchmark for which all other marks vying for well-known mark status should be judged. The decision sets a judicial precedent that must be followed in the absence of strong and compelling reasons to deviate from this sacred rule. xxx "8. As will be shown hereunder, Opposer's JOLLIBEE mark significantly exceeds the benchmark set in the 'In-N-Out' case and is therefore entitled to be officially recognized as a well-known mark. "9. The JOLLIBEE mark was first used in the Philippines on 26 January 1978 for quick-service restaurants serving food and beverages. After thirty-four (34) continuous years in business, there are now about 765 JOLLIBEE restaurants in the Philippines alone. There are now 87 JOLLIBEE restaurants abroad located in the United States of America, Hong Kong, Brunei, Vietnam, Jeddah, Qatar and Kuwait. In total, there are more than 850 JOLLIBEE restaurants worldwide serving an estimate of more than 2 million customers on a daily basis. The patronage for the JOLLIBEE products is so strong that Filipinos, especially overseas, always form long lines to welcome every store opening. Just an example, a video of the opening of Opposer's store in New York, USA can be viewed on YouTube and it shows that long lines and excitement of customers waiting to enjoy Opposer's food and services. Comments therein refer to lines 'going for blocks' long after the store opened. "10. Following are some of the highlights in the Opposer's history: xxx "11. On 10 October 2012, Opposer hosted the delegates of the Follow-up Session to the WIPO-Sweden Advanced Training Course on Industrial Property in the Global Economy from Asia, Africa, Europe and Latin America, at he request of the IPO. This event is a testament as to how the Company has successfully leveraged the use of its intellectual property rights to gain business competitive advantage not only in the Philippines but also internationally. A group photo from the said event is shown below: xxx "12. It is worth emphasizing that Opposer has continuously used the JOLLIEE Trademarks in each Jollibee outlet and in almost all product packaging, advertising and promotional materials. Its products and services can also be viewed online through its website www.jollinee.com.ph where the JOLLIBEE Trademarks are prominently featured. This shows that the JOLLIBEE mark and the other JOLLIBEE Trademarks have been used and promoted for a long time, and that such use and promotion are extensive and cover a wide geographical area. "13. It should also be noted that building brand awareness and identity has been central to Opposer's business from its early years. Opposer has invested more tha: PHP 1 Billion for advertising and promotions for each of the years 2010 and 2011. Over the years, this investment has won recognitions and awards as it produced some of the most memorable images in Philippine advertising history, featuring now famous terms such as 'Langhap-Sarap' and products such as the iconic 'CHICKENJOY' and 'YUMBURGER'. Among the celebrities that have endorsed the JOLLIBEE restaurant and its products are Aga Muhlach, Sarah Geronimo, Sam Milby, Gerald Anderson, Kim Chiu, Mark Bautista, Enchong Dee, Sam Conception, and most recently, Jessica Sanchez, who were featured in equally popular television and print advertisements. Some of the older advertisements continue to be patronized on internet sites such as YouTube (www.youtube.com) where they have thousands of 'hits' from viewers. "14. Opposer invests just as much, if not more, in making sure that it produces and renders only the best quality products and services. This attention to quality has resulted in Opposer being among one of the most recognized and respected businesses in the country. Among the local and international awards received by Opposer are identified below: xxx "15. No less than President Benigno Aquino III, during the opening ceremony for the Opposer's 700th Jollibee store in the Philippines, has praised Opposer for its contributions to and role in our nation. In his speech, the President noted how Jollibee stores served as their landmarks during the presidential campaign period to show them where they are, attesting to the extensive network of Jollibee outlets nationwide. A video of the President's speech can be viewed online with the following description: xxx "16. Without a doubt, Opposer's long, continuous and extensive use, promotion and advertising of its JOLLIBEE Trademarks have created a brand that is so popular throughout the Philippines and around the world that a mere mention of the words 'JOLLIBEE' and 'JOLLY' or a mere look at the words 'JOLLIBEE' and 'JOLLY' would immediately cause the consuming public to associate the same with Opposer and its restaurants and other related products and services. "17. The renown attributable to Opposer and its JOLLIBEE Trademarks are well-documented. Various articles from the WIPO publication, 'In Good Company: Managing Intellectual Property Issues in Franchising', International Law News of the American Bar Association, Yahoo! Travel, Yahoo! News, The Philippine Star, GMA News, CNN Money, The New York Times, Los Angeles Times, Business World Online, and various blogs from different parts of the world attesting to the renown and well- known status of Opposer and its JOLLIBEE Trademarks worldwide, particularly in the United States of America, Brunei, United Arab Emirates, China, Qatar, Kuwait, Vietnam, Hong Kong, and Singapore have been published. Reproduced below is a portion of the article from Yahoo! Travel entitled 'Best fast-food chains in the world': xxx "18.
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